Ex parte Torres

Board of Patent Appeals and Interferences

Dec 17, 1999

09020635 (B.P.A.I. Dec. 17, 1999)

Application for patent filed February 9, 1998. 1
According to appellant this application is a continuation-in-
part of Application No. 08/714,628, filed September 16, 1996,
now U.S. patent 5,716,040.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MANUEL TORRES
____________
Appeal No. 1999-2726
Application No. 09/020,6351
____________
ON BRIEF
____________
Before CALVERT, MCQUADE, and NASE, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1999-2726
Application No. 90/020,635
2
This is an appeal from the final rejection of claims 1 to
9, all the claims in the application.
The claims on appeal are drawn to a safety vehicle lift,
and are reproduced in the appendix of appellant’s brief.
Appeal No. 1999-2726
Application No. 90/020,635
3
Claims 1 to 9 stand finally rejected on the grounds that:
(1) They contain subject matter which is not described in the
specification in such terms as to comply with the enablement
requirement of 35 U.S.C. § 112, first paragraph;
(2) They are not in compliance with 35 U.S.C. § 112, second
paragraph.
Rejection (2)
Considering first the question of compliance with the
second paragraph of § 112, the examiner states on page 3 of
the final rejection (Paper No. 6) that:
The phrase "opposite ends secured to the
axially shiftable ends of the crosslinkage" in
claim 1, line 23 appears to be inaccurate since
only one end of the cross brace is apparently
connected to the crosslinkage. Similarly, the
phrase "the opposite ends of the cross brace
being coupled to guide rollers" in claim 1, line
26 appears to be inaccurate since only one end
of the cross brace is apparently connected to
the guide rollers.
We do not consider this rejection to be well taken. A
claim complies with the second paragraph of § 112 if its
language, when read by one of ordinary skill in the art in
light of the specification, describes the subject matter with
sufficient precision that the bounds of the claimed subject
Appeal No. 1999-2726
Application No. 90/020,635
4
matter are distinct. In re Merat, 519 F.2d 1390, 1396, 186
USPQ 471, 476 (CCPA 1975). In the present case, as appellant
points out on page 9 of the brief, cross brace 49 is disclosed
on pages 5 and 6 of the specification as having "opposite
ends" 52 which are secured to axially shiftable ends of the
cross linkage elements, and guide roller supports are attached
to each end of the cross brace. The correspondence between
this disclosure and the claim language in question is such
that we consider that, when read by one of ordinary skill in
light of this disclosure, claim 1 would be sufficiently
precise to comply with the second paragraph of
§ 112.
Accordingly, rejection (2) will not be sustained.
Rejection (1)
It is fundamental that "[i]n order to satisfy the
enablement requirement of § 112, paragraph 1, the
specification must enable one of ordinary skill in the art to
practice the claimed invention without undue experimentation."
National Recovery Technologies Inc. v. Magnetic Separation
Sys. Inc., 166 F.3d 1190, 1196, 49 USPQ2d 1671, 1676 (Fed.
Cir. 1999). In the present case, the examiner specifies a
Appeal No. 1999-2726
Application No. 90/020,635
5
number of inconsistencies between drawing figures, unclear
depictions of parts in the drawings, etc., as items forming
the basis for rejection (1). However, none of these reasons
concern the claimed subject matter, and we consider that one
of ordinary skill would not have to engage in undue
experimentation in order to make and use what is recited in
the appealed claims.
Rejection (1) therefore will not be sustained.
This is not to say, however, that we do not consider that
the items enumerated by the examiner do not have merit and
need not be corrected. For example, since the tongue and
groove structure 43, 44 shown in Fig. 8 is an alternative to
the hinge 15 shown in Fig. 2 (as disclosed on page 4, lines 3
to 5), Fig. 8 should be described on page 3 as showing a
second embodiment of the invention. However, these items
constitute a basis for objecting to the specification and/or
drawings, rather than for rejecting the claims under § 112.
Cf. Ex parte Milner, 21 USPQ 589, 590 (Bd. Apps. 1933).
An additional potential basis for objection which we have
noted concerns Fig. 7. In that Figure, the element which
extends from pivot 32 to end 38 is shown as being nearer to
Appeal No. 1999-2726
Application No. 90/020,635
6
edge 14 of the base 12 than the element which extends from
pivot 34 to end 36, while in Figs. 1 and 2 the position of
these two elements is reversed. Also, on page 5, last three
lines, it is stated that the ends 52 of cross brace 49 "are
secured to the axially shiftable ends 36[,] 38 of the cross
linkage elements 28 within the lower portion 22," but although
only ends 36 are "within the lower portion 22," Fig. 7 seems
to show ends 52 of the cross brace 49 as being connected only
to ends 38.
Appeal No. 1999-2726
Application No. 90/020,635
7
Conclusion
The examiner’s decision to reject claims 1 to 9 is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
SLD
Appeal No. 1999-2726
Application No. 90/020,635
8
Richard L. Huff
Law Offices of Richard L. Huff
19304 Olney Mill Road
Olney, MD 20832
Shereece
Appeal No. 1999-2726
Application No. 90/020,635
APJ CALVERT
APJ NASE
APJ MCQUDE
REVERSED
Prepared: May 31, 2000